Two Israeli restaurant chains planning to enter the U.S. market discovered that a U.S. company had already registered their names as trademarks – along with the names of other well-known Israeli restaurant and supermarket brands.
The trademark registrations are apparently all fictitious, as the company does not appear to be operating any actual businesses using the companies’ names, including Cafeneto, Cafe Hillel, Cofizz, Ilan’s and Osher Ad. The first four are Israeli coffee shop chains, while Osher Ad is a major Israeli discount supermarket.
The company, whose owners are not known, appears to be familiar with the Israeli market and is evidently attempting to cash in on Israeli chains that expand overseas by forcing them to buy back the rights to their names.
That same company had also registered the name Miznon, a gourmet food-in-a-pita chain owned by Israeli celebrity chef Eyal Shani with branches in several other countries.
Miznon discovered that its name was already registered as a trademark in the United States when it was working on choosing a location for its first restaurant there, according to attorney Jenny Mazor-Gordon, who is representing Ilan’s in a similar trademark case.
Miznon owners Shani and business partner Shahar Segal were surprised, according to Mazor-Gordon, and argued that the other company, which is registered in New York, had registered their trademark fraudulently, without their knowledge and while presenting false evidence indicating that it was operating a restaurant by this name in New York.
The suit ended in September after the other company gave up its claim to the trademark.
Ilan’s, a well-known Israeli coffee shop chain, is now going through a similar process. Mazor-Gordon says the chain was surprised to find that its name was already registered as a trademark there, adding that she was even more surprised to find out that the same company had registered the trademarks of other well-known Israeli brands as well.
“All these [trademarks] were registered with the United States Patent and Trademark Office by that New York-based company, which has no connection to the actual rights holders,” she said. She does not know who owns or runs the New York company.
Registering a trademark grants the trademark owner exclusive rights to use that trademark for the purposes listed in the registration. To register a trademark in the United States, the trademark owner must prove that the trademark is in use. When filing for the trademark, it is enough to show plans to launch operations and indicate intent to use the name; the company later needs to prove that the name is actually in use. In the case of a coffee shop trademark, this would involve showing that there is indeed an operational coffee shop using the name.
Israeli companies that wish to prove that their names have been registered fraudulently would need to prove that the prior registration is fraudulent. This could involve hiring a detective agency.
Many Israeli chains have opened branches abroad, and the New York company apparently believes it likely that many of the Israeli companies are likely to look to expand in the United States.
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